DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-517862 A, of which a complete copy of the Japanese document with a machine translation was provided with the Office Action mailed August 22, 2025.
Regarding independent claim 1 and claim 5, JP ‘862 discloses an electrode for a lithium secondary battery (abstract; pages 5-9 of machine translation under the heading DESCRIPTION OF EMBODIMENTS on page 2 of the machine translation; and Figures 1 and 2), in which the electrode comprises the following:
an active material (see the paragraph bridging pages 5 and 6 of translation; and the first two paragraphs on page 6 of translation); and
a fibrillated binder (see page 9 of translation), including polytetrafluoroethylene (PTFE), wherein a specific gravity of the fibrillated binder measured according to ASTM D4985 is about 2.160 to 2.185, which is entirely encompassed by a range of specific gravity values of 2.13 to 2.22 for types of PTFE.
With regard to the specific gravity value range of PTFE to be “about 2.160 to 2.185”, this range would be anticipated and/or obvious since this range would be readily contemplated by one of ordinary skill in the art, including that the claimed range of specific gravity is entirely encompassed by a somewhat broader range of specific gravity values for types of PTFE. In this instance, one of ordinary skill in the art would have recognized the obviousness of the specific gravity range for types of PTFE in view of JP ‘862, as set forth in MPEP 2144.05. “In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, although JP ‘862 does not explicitly disclose that a diameter of the fibrillated binder ranges from about 0.01 µm to 10 µm, one of ordinary skill in the art would have recognized that this broad range would be anticipated and/or obvious since this range would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the fibrillated binder (PTFE) diameter range for types of PTFE in view of JP ‘862, as set forth in MPEP 2144.05. “In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, KR 2018-0119158 A (cited in PTO-892 with a complete copy of the Korean document with a machine translation being provided with this Office Action) is provided as evidence of fibrillated binder particles sizes of less than about 3 µm (see the last paragraph on page 2 of the machine translation beginning with “In some embodiments, the super-fibrillated binder particles are less than about 3 microns…” under the heading DESCRIPTION-OF-EMBODIMENTS).
Regarding claim 4, JP ‘862 discloses that the electrode comprises the fibrillated binder (PTFE) at 3.5% by weight, within the claimed range of an amount of about 0.1% to 5% by weight (see the first full paragraph on page 8 of translation beginning with “FIG. 2 shows an example…”).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-517862 A, and further in view of JP 2020-021674 A, of which a complete copy of the Japanese document with a machine translation is provided with this Office Action.
Regarding claim 2, JP ‘862 discloses the features of independent claim 1, but does not disclose that the electrode further comprises a sulfide-based solid electrolyte.
However, JP ‘674 discloses a lithium secondary battery having electrode layers and a solid electrolyte (abstract; pages 2-5 of machine translation under the heading DESCRIPTION-OF-EMBODIMENTS on page 2 of the machine translation; Examples 1 and 2; and Figure 1), wherein the solid electrolyte comprises a sulfide-based solid electrolyte (see the last two full paragraphs on page 4 of translation; the paragraph bridging pages 4 and 5 of translation; and the first four full paragraphs on page 5 of translation, in which the sulfide-based solid electrolyte is advantageous for obtaining high ionic conductivity, as well as thermal and chemical stability (see the paragraph bridging pages 4 and 5 of translation).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the applicants’ invention was made to modify the electrode for a lithium secondary battery, as disclosed by JP ‘862, by using a sulfide-based solid electrolyte, as taught by JP ‘674, in order to obtain high ionic conductivity, as well as thermal and chemical stability (JP ‘674; see the paragraph bridging pages 4 and 5 of translation).
Response to Arguments
The examiner acknowledges the applicants’ amendment received by the USPTO on November 24, 2025. An Information Disclosure Statement dated October 27, 2025 has been considered and initialed, and a copy is provided with this Office Action. The amendment overcomes the prior objection to claim 1. The applicants have amended independent claim 1 to narrow the claimed range. Claims 6-12 remain withdrawn from consideration as being drawn to a non-elected invention. Claims 1-5 remain under consideration in the application.
Applicants' arguments filed November 24, 2025 have been fully considered but they are not persuasive.
With regard to the applicants’ remarks/arguments on pages 4 and 5 of the amendment, the applicants’ major argument is that the applicants’ claimed range of specific gravity of the fibrillated binder being 2.160 to 2.185 is allegedly not anticipated nor rendered obvious in view of JP ‘862 “because JP ‘862 does not explicitly mention the specific gravity of PTFE” (in the last paragraph on page 4 of the REMARKS section) and that “the technical feature of the present invention lies in using high molecular weight PTFE having a specific gravity in the specific range of 2.160 to 2.185 to ensure that fibrillation occurs well” (in the 2nd paragraph on page 5 of the REMARKS section). The examiner respectfully disagrees. JP ‘625 discloses (on page 9 of translation) a fibrillated binder (including PTFE), wherein specific gravity values of PTFE range between 2.13 to 2.22 based on “common technical knowledge” (as stated by applicants in the 2nd paragraph on page 5 of the REMARKS section). Since the applicants’ amended range of 2.160 to 2.185 is totally encompassed by a somewhat broader range of 2.13 to 2.22 (also in referring to the newly underlined portions in the above 35 USC 102/103 rejection of independent claim 1), and absent other parameters (e.g. binding force and chemical stability, as stated by applicants in the 4th paragraph on page 5 of the REMARKS section but are not explicitly claimed as essential parameters) other than specific gravity, JP ‘862 anticipates and/or renders obvious the features of amended independent claim 1. In response to applicants' argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In view of the 35 USC 102/103 and 35 USC 103 rejections and for these additional reasons, claims 1-5 remain rejected.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 December 18, 2025